Sara Lee/DE N.V v S.C. Johnson & Son, Inc - [2003] APO 7

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 711453 in the name of Sara Lee/DE N.V.

Title: Cleaning a freshening unit intended for suspension from a rim of a toilet bowl

Action: Opposition under Section 59 by S.C. Johnson & Son, Inc.

Decision: Issued 18 February 2003
Abstract

All claims of the specification were found to be novel, since not all the essential features identified in the claims were present in the prior art document that the opponent relied upon.
When the specification was read as a whole, the claims were considered clear. While the opponent argued that the claims were not fairly based, since they did not specifically exclude the drawbacks identified as problems of the prior art and, thus, did not achieve the objects of the invention, this was an oversimplification. Although the objects of the invention listed in the specification may be useful as a guide to what has been invented, the specification must be read as a whole to determine what the invention is before then assessing the claims for fair basis. In this light, but not necessarily following the opponent's arguments, the claims were not fairly based.
The description was found to be sufficient, since it was clear that the invention was much more than the new use of a Mariotte Flask (the "known contrivance"). While the present invention operates on the same principle as a Mariotte Flask, this does not make it the same contrivance.
Patentable subject matter was believed to be present. The applicant was given 60 days to propose suitable amendments.
No award of costs was made.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 711453 in the name of Sara Lee/DE N.V. and opposition thereto by S.C. Johnson & Son, Inc. under section 59 of the Patents Act 1990

BACKGROUND

Patent application No. 711453 in the name of Sara Lee/DE N.V ("Sara Lee") was filed on 21 November 1996, claiming priority from Dutch patent application NL 1001722. This application was advertised accepted on 14 October 1999.
S.C. Johnson & Son, Inc. ("Johnson") filed a notice of opposition to the grant of the application on 14 January 2000. The statement of grounds and particulars was served on 14 April 2000.
The serving of all evidence was completed on 12 August 2002, and the matter was heard in Canberra on 29 November 2002. Sara Lee was represented by Mr Bruce Caine of counsel instructed by Mr Peter Wallace, patent attorney, of Allens Arthur Robinson, Melbourne. Johnson was represented by Mr Greg Turner, patent attorney, of Spruson & Ferguson, Sydney.
THE SPECIFICATION
The specification describes an air freshener of the type that hangs from the rim of a toilet bowl and contains a perfumed liquid in a detachable reservoir, which incrementally flows via its liquid outlet into a porous mass. When the toilet is flushed, the water washes at least part of the liquid held in the porous mass into the bowl. This releases the perfume thereby masking any lingering odours. The liquid washed out of the porous mass is then replaced by more liquid flowing from the reservoir. When the reservoir is empty it is replaced by another reservoir.
The specification discloses two problems with prior air fresheners of this type. The first is that, as the liquid level in the reservoir falls, the liquid flow rate falls. Another is that, as the liquid flows out of the reservoir, and ambient air is needed to fill the volume that it leaves behind, the air moves into the reservoir through the liquid outlet via the porous mass. As the air only flows into the reservoir via the porous mass with difficulty, there is a risk that a reduced pressure will be created in the reservoir that limits, or does not allow, further liquid moving into the porous mass.
The solution proposed is to provide an air supply opening, in addition to the usual liquid passage, so that the liquid pressure on the porous mass is always the same regardless of the liquid level in the reservoir.
The specification ends with 8 claims (one of which is an omnibus claim), of which independent claim 1 reads as follows:
1.A cleaning and freshening unit provided with a holder and a bottle detachably connected to the holder and including a liquid reservoir, said unit being provided with suspension means for suspending the unit from a rim of a toilet bowl, said unit also being provided with a porous, liquid-absorbing mass which always communicates with liquid contained in the liquid reservoir, said porous mass being arranged in the holder so as to be located in a path of the flushing water when the unit is suspended from the rim of the toilet bowl, said holder being provided with a connecting nipple suitable for connection to a discharge opening of the bottle, so that when the unit is suspended from the rim of the toilet bowl the discharge opening is directed downwards, characterised in that the discharge opening of the bottle when connected is partly closed by a closing wall provided with at least one liquid passage opening which opens into an inlet of a channel abutting with an outlet having a limited surface against the porous mass, and provided with at least one air supply opening communicating with the ambient pressure, the sizes of the at least one liquid passage opening and the at least one air supply opening being so adjusted to each other and to the viscosity of the liquid contained in the liquid reservoir that the liquid pressure on the porous mass is always substantially equal and independent of the liquid level in the liquid reservoir.
STATEMENT OF GROUNDS AND PARTICULARS
The grounds relied upon by the opponent were that the invention was not patentable because it did not comply with the following parts of the Act:
(a)paragraph 18(1)(a) (manner of manufacture)
(b)paragraph 18(1)(b) (novelty and inventive step)
(c)subsection 40(2) (sufficiency)
(d)subsection 40(3) (clarity and fair basis).
In support of grounds with respect to paragraph 18(1)(a), the opponent stated that the invention was not a manner of manufacture because it did not "meet the threshold requirement for an invention" when regard was had to cleaning and freshening units known and used in Australia, as well as a number of published patent documents. In support of the grounds relating to paragraph 18(1)(b), the particulars referred to the same list of patent documents as set out for manner of manufacture, with or without the addition of common general knowledge, as the case may be. The particulars in relation to the section 40 grounds indicated that the specification was insufficient, and that the claims lacked clarity and fair basis.
EVIDENCE IN RELATION TO THE OPPOSITION
The evidence in support of the opposition consists of only one declaration by Dr. Wayne A. Davies ("Davies 1") of Wayne Davies Consulting Engineers, a company apparently associated with the Chemical Engineering Department of the University of Sydney, and includes 4 exhibits.
The evidence in answer also consists of only one declaration by Professor Thomas William Healy, a Professorial Fellow and a deputy director of the Particulate Fluids Processing Centre at the University of Melbourne, and includes 2 exhibits.
The evidence in reply consists of another declaration by Dr. Wayne Davies ("Davies 2").
From the evidence it is clear that both Dr. Davies and Professor Healy are persons skilled in the art.
DECISION
In proceedings such as these before the Commissioner, in reaching a conclusion on any issue the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). However the onus rests with an opponent to clearly establish its case.
SECTION 40
Clarity
The opponent submitted that claim 1 was not clear because, while it required the pressure on the porous mass to be "substantially equal", the specification did not give any indication what the pressure is equal to. The applicant submitted that this phrase was quite clear, and meant that the pressure on the porous mass remained the same regardless of the liquid level in the reservoir.
From page 1a of the specification, the prior art suffered from problems because, as liquid was dispensed, a "reduced pressure" formed in the bottle which inhibited the passage of the liquid. In view of this, and with the applicant wishing to avoid this pressure drop, it is very clear that the applicant set out to design an air freshener in which, as the liquid was dispensed, the pressure in the bottle did not drop, i.e. it remained the same. This was clearly the meaning that the phrase "substantially equal" was meant to convey. While the opponent submitted that, if this was the case, the applicant could have used this, much simpler, terminology, I do not believe that this is relevant here. The specification must be read as a whole (see, for example, Welch Perrin and Co Pty Ltd v Worrel (1961) 106 CLR 588, and Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385), and, from the specification as a whole, the meaning of "substantially equal", to my mind, is very plain. The applicant's position is the correct one. Therefore, the claims are clear.
Fair Basis
The fundamental requirement for a claim to be fairly based on a particular disclosure is that the disclosure must contain a "real and reasonably clear disclosure of the subject matter of the claim" - see CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479 and (1995) AIPC 91-121.
The opponent submitted that claim 1 was not fairly based on the description. They submitted that the description, at page 1a, lines 10-13, stated that a drawback of the known air fresheners was that the bottle communicated with the ambient air via the porous mass. The description then stated, at page 1a, lines 18-20, that the object of the invention was to provide an air freshener that did not have the drawback of drawing air through the porous mass. However, they submitted, claim 1 did not exclude air being drawn back into the bottle via the porous mass, and was not fairly based.
The applicant, in their written submissions, made the point that the claims are so limited when "properly construed in the context of the specification as a whole", and also that the air supply openings communicate with the ambient pressure.
As noted by the opponent, the object of the invention is given at page 1a, lines 18-20 where it states:
"The object of the invention is to provide a cleaning and freshening unit of the type mentioned in the opening paragraph which does not have the above-mentioned drawbacks"
Thus, on first glance, it would appear that if the claim does not specifically exclude the drawbacks that have previously been mentioned, it must fail for lack of fair basis. This is what the opponent appears to have submitted. However, this may be an oversimplification. In my opinion, there is not necessarily a need for the invention defined in the claims to achieve the objects of the invention as stated in the specification. While these "objects" may provide a useful guide as to what the invention is, it is the invention set out in the specification as a whole that must be considered when determining if the claims define the necessary features that achieve the invention's promise (Welch Perrin and Co Pty Ltd v Worrel (supra), and Decor Corporation Pty Ltd v Dart Industries Inc (supra)). From the specification as a whole, it seems to me that the invention lies in an air freshener in which the pressure in the liquid reservoir is kept constant regardless of the liquid level.
The specification is quite clear that, in the prior art, air entered the discharge opening of the bottle via the porous mass. As the air travelled through the porous mass with difficulty, there was a risk of reduced pressure being created in the reservoir leading to draining problems. From page 1a, lines 24-28 of the specification, the provision of appropriately sized air supply opening(s) allows air to enter so that the pressure in the bottle remains substantially equal and independent of the liquid level. From page 2 lines 1-7, since the pressure was substantially constant, "the drawbacks of the known unit have been removed". Thus, from this, it would appear that the claim, including the features of air supply openings, has the feature that allows the invention's promise to be achieved.
However, the applicant, in their written submissions in describing the operation of the present invention, made the comment that "there is a flow of air into the reservoir via the air supply opening(s) which communicate directly with the ambient air rather than solely via the porous mass" (my emphasis). In addition, Professor Healy in his declaration (paragraph 2.6), in explaining how the invention overcomes the prior art drawbacks, makes the statement that "the provision of an air supply opening separate from the porous mass allows the reduced pressure in the space above the liquid to be compensated for" (my emphasis). Thus, to keep the pressure substantially constant, the air supply openings are not to contact the porous mass.
This limitation is not in the claim. The claim merely defines that the closing wall has at least one air supply opening "communicating with the ambient pressure". To my mind the claim includes both direct and indirect communication within its scope. Even though the applicant submitted that the claims are so limited when reading the specification as a whole, I can see no reason to interpret "communicating" as meaning "directly communicating". While, from Decor Corporation Pty Ltd v Dart Industries Inc (supra), reference may be had to the description to clear up any ambiguity in the claims, in my opinion the applicant's approach is an instance of importing a gloss from the description so as to remove other, equally valid interpretations from the claim. That being the case, as the prior art had problems with reduced pressure since its air supply entered solely via the porous mass, and there is no limitation in the claim that the air supply openings are separated from the porous mass, the invention defined is not an air freshener in which the pressure in the reservoir is kept substantially constant. Thus, claim 1 is not fairly based.
Also on fair basis, the opponent submitted that the description, at page 1a, lines 30-33, stated that the invention is "characterised" by air supply openings which:
".. must be so small that as a result of the viscosity and the surface tension of the liquid therethrough, at least under normal conditions, no liquid discharges."
The opponent submitted that claim 1, in its characterising portion, did not have the feature that the sizing of the air opening was such that no liquid discharged, and was, again, not fairly based.
The applicant's written submissions on this point do not clearly go into why this feature should not be in the claim, but rather are directed to the fact that the description teaches that no liquid is to discharge through the air supply openings under normal circumstances. If there is a discharge through these openings due to temperature fluctuations, a chamber is provided to accommodate any liquid that may exit them.
While the use of "must" in the above-cited passage would suggest that this feature has to be present, this is not necessarily the case. As noted above, from the specification as a whole the invention is an air freshener in which the pressure in the liquid reservoir is kept constant regardless of the liquid level. This is achieved, as the applicant noted in their submissions, by the addition of air supply openings. Notwithstanding the fair basis problems noted above, this feature is generally in the claim. The person skilled in the art would understand that these air supply openings would have to be just that - openings that, under normal circumstances, admit air, but do not allow liquid to flow through them. It is not necessary that this feature be explicitly placed in the claims. To do so, in my opinion, would be subjecting the specification to the kind of " over meticulous verbal analysis" warned against in CCOM Pty Ltd v Jiejing Pty Ltd (supra). Therefore, I believe that claim 1 is fairly based in this respect.
Insufficiency
The main focus of the opponent's case related to insufficiency. As is obvious, claim 1 defines the invention by reference to the result which is to be achieved. A claim defining the invention by result can be a valid claim, but the specification must set out the means by which that result can be obtained, or it must be attainable by the exercise of common general knowledge, with no inventive faculty.
According to Dr Davies' evidence, the specification did not give enough information as to the sizes of the respective liquid and air supply openings, particularly with regard to viscosity, as was claimed.
In contrast, in the evidence in answer, Professor Healy gave evidence that he found no lack of sufficiency.
The opponent directed me to Universal Oil Products v Monsanto (1973) 46 ALJR 658, where it was said:
"The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonably competent skill in the practical mode of doing what was then known."
As this passage indicates, no specification is to be read in a vacuum. A specification is addressed to people skilled in the art. I think it reasonable to expect that the skilled addressee would be in possession of all the common general knowledge in the art, and it is also reasonable to expect the addressee to have skills which he or she can bring to bear in carrying out the invention described.
As the applicant submitted, it is not necessary for a complete specification, in describing the best method of performing the invention, to provide details that the addressee of the specification (the person skilled in the art) can supply from their own background knowledge. As was stated in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243:
[I]n other words, [it is essential] that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee's monopoly has come to an end. Such disclosure is, indeed, the consideration that the patentee gives for the grant to him of a monopoly during the period that the patent would run….
It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it."
This principle may not have been fully comprehended by Dr Davies. He appears not to have applied any common general knowledge of his own, but has expected the specification to give exact details of what is to be constructed. While this may be the norm with academic papers, it is not necessarily the case for patent specifications.
The opponent also submitted that there was no clear instruction as to how to design the holes, no relativity given, no absolute values for the hole sizes, and not even one working example that "would give you some feel for that area". However, I note that the specification has drawings, and in those drawings air supply and liquid discharge openings are shown, and their relative sizes are also clear. This would appear to be an example of the invention. While I am aware that, in patent specifications, drawings are quite often not to scale, the clear teaching of the specification is that the air supply holes are a good deal smaller than the liquid discharge hole. This must surely be considered to be giving a "feel for that area".

As pointed out in Universal Oil Products v Monsanto (supra):
"The question of sufficiency is one of fact, and whether a specification is sufficient to disclose the method of carrying out the invention is a matter which can best be determined by receiving evidence from persons skilled in the art."
Also consistent with this is the notion that the skilled addressee should be able to carry out reasonable trials and correct errors in the specification. In Valensi & Another v. British Radio Corporation, (1973) RPC 337 it is stated:
"We think that the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not expected to exercise any invention nor any prolonged research inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in working trials and to correct obvious errors in the specification if a means of correcting them can readily be found."
While Dr Davies quite unequivocally states that he has not "come across one laboratory technician that could take the opposed specification and arrive at appropriately sized openings", Professor Healy also quite clearly states:
".. the Specification identifies … that the air supply openings must be so small that as a result of viscosity and surface tension of the liquid, no liquid discharges under normal conditions. This is a direction that can be readily followed to determine the size of the air opening, for any particular liquid. That is, if a given diameter results in discharge of liquid under normal conditions, I would reduce the size of the opening. This is a direction which could, in my opinion, be followed by any competent but uninventive laboratory technician."
Thus, there are two people skilled in this art who arrive at different results. However, in this case, apart from bare assertion by Dr Davies, there is no evidence from the opponent that they attempted to manufacture the air freshener and failed to do so. On the other hand, Professor Healy quite clearly states what he would do if his first attempt at sizing the openings failed (i.e. quite sensibly in my opinion, he would reduce the size of the opening). He has approached the problem in a manner that I would consider to be the one expected. That is, not reading the specification in a vacuum, applying the common general knowledge of the art when necessary, and recognising that a process of trial and error may be needed in making the invention.
As I noted at the start of this decision, the onus is on the opponent to clearly establish its case. The assertions by Dr Davies, without any supporting evidence to corroborate them, are not convincing. Professor Healy, in giving an example of the course he would follow in trying to make the invention work, is much more credible.
In my opinion, the specification is sufficient.
SECTION 18
Manner of Manufacture
Manner of manufacture was raised in the statement of grounds and particulars in relation to the invention not satisfying the "threshold of inventiveness". However, at the hearing, the opponent argued that the invention was not a manner of manufacture because it was for a new use of a known contrivance, and did not apply the "threshold of inventiveness" test.
The opponent's submissions on this point were based on the evidence set out in Davies 2. In paragraph 8 of that declaration Dr. Davies describes a device known as a "Mariotte Flask" which is a device designed to give a constant head of liquid at the liquid outlet of a reservoir. It has a reentrant tube that communicates with the atmosphere projecting into the reservoir so that, when liquid passes out of the liquid outlet (thus creating partial vacuum in the reservoir) air is drawn through the reentrant tube to replace the volume of liquid removed.
The opponent submitted, as the invention is the application of a Mariotte Flask to the situation of applying liquid to a porous mass, it is a new use of a known contrivance.
The applicant submitted that this argument should not be admissible since the first mention of a Mariotte Flask was in the evidence-in-reply. They submitted that, as the argument was clearly part of the main case raised by the opponent, it should have been raised in the evidence-in-support.
I also have a concern that this ground was not adequately particularised. At no point in his evidence (either in support or in reply) does Dr Davies say something to the effect of "this is a new use of the known Mariotte Flask". The argument was only raised at the hearing. There was nothing in the particulars or evidence that even hinted at such an argument.
However, while the applicant may be correct, and despite my concerns that the ground may not have been adequately particularised, these points are of no consequence, since the argument is not made out.
The reasoning set down in Gadd and Mason v The Mayor of Manchester (1892) 9 RPC 516 that the opponent directed me to was:
"A patent for the mere use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad and cannot be supported. If the new use involved no ingenuity but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James."
It is important to note that, in the decision of Gadd and Mason v The Mayor of Manchester (supra), immediately following the paragraph that was highlighted for me, there is another which reads:
"On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own."
It is also relevant to note that, in Davies 2, in the last part of paragraph 8 there is the following:
"The current Design employs the Mariotte Flask principle. In place of a tube entering via the top of the reservoir and communicating with atmosphere, the current Design uses a capillary hole in the base of the vessel that communicates with atmosphere. The Mariotte-Flask principle has been appreciated by the designers because of the position of the air inlet capillary is above that of the liquid outlet, the height difference being necessary to ensure a nett positive head at the liquid outlet." (my emphasis)
In my view, and as Dr. Davies declares, the present invention and a Mariotte Flask work on the same principle. This is not the same as saying that it is the same contrivance. Many apparatus in many arts all use the same principles, but they are not the same devices. The present invention was not the mere placement of a Mariotte Flask in a new situation. It is clearly more than that. Therefore, it is clear to me that the present application is for the new use outlined in the second paragraph of the reasoning of Gadd and Mason v The Mayor of Manchester (supra) set out above. The present invention is a manner of manufacture.
Novelty/Inventive Step
In spite of the number of patent documents listed in the statement of grounds and particulars, at the hearing the opponent relied on only one - EP 538957. This document was published on 28 April 1993, well before the priority date of the present application, and this publication date was not disputed. It is clearly part of the prior art base as defined in the Patents Act.
With regard to novelty, at the hearing the opponent submitted that the test to determine novelty was the "reverse infringement" test. This test was set out in Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228 at page 235 where Judge Aickin stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517; 16 IPR 545 at page 549).
The applicant, on the other hand, submitted that, for paper anticipations, the reverse infringement test from the Meyers (supra) decision cannot be applied literally. The applicant relied on a number of earlier decisions to submit that an alleged paper anticipation must contain clear and unmistakable directions to do what the claimed invention does. They also directed my attention to Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553, and, in particular, the following passage:
"What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it."
The common ground between the opponent's and the applicant's submissions appears to be that, to establish a lack of novelty from a document, there has to be a disclosure in that document of all the essential features of the claim. While the opponent's approach may allow for some "looseness" by permitting substitution of technical equivalents for features in the citation to anticipate the claim(s), or possibly claiming certain features to be implicitly disclosed, whereas the applicant's approach allows nothing of this sort, it is, nevertheless, a good starting point. In this respect, I will proceed along these lines. If there are features which, while "present" using the opponent's approach but not using the applicant's, and it is critical to the outcome of my deliberations, I may need to revisit the level of disclosure that is required.
In this case there appears to be no suggestion that any of the features of any of the claims are not essential features.
Looking at claim 1, I note the following essential features:
(1)a cleaning and freshening unit provided with a holder and a bottle detachably connected to the holder, the bottle includes a liquid reservoir;
(2)suspension means for suspending the unit from the rim of a toilet bowl;
(3)a porous, liquid-absorbing mass ("porous mass") which is always in communication with the liquid contained in the reservoir;
(4)the porous mass is located in the holder so that it is in the path of the flushing water when the unit is suspended from the toilet bowl rim;
(5)the holder has a connecting nipple which is suitable to connect to the discharge opening of the bottle;
(6)when the unit is suspended, the discharge opening is directed downwards;
(7)the discharge opening is partly closed by a closing wall, which is provided with at least one liquid opening that opens into a channel whose outlet abuts the porous mass;
(8)the closing wall also has at least one air supply opening communicating with the ambient pressure; and
(9)the sizes of the liquid opening(s) and the air supply opening(s) are adjusted to each other and to the viscosity of the liquid contained the reservoir so that the liquid pressure on the porous mass is always substantially equal and independent of the liquid level in the reservoir.
EP 538957, which is mentioned in the specification as an example of a prior art air freshener, describes an air freshener of the type that hangs from the rim of a toilet bowl. It has a holder and a detachable bottle forming a liquid reservoir containing a perfumed liquid. The liquid incrementally flows out of the bottle's discharge opening at the end of its neck into a porous mass held by the holder. When the unit is hung from the toilet rim, the discharge opening is directed downwards. The porous mass is located in the holder so that when the toilet is flushed, the water washes at least part of the liquid held in the porous mass into the bowl. The liquid washed out of the porous mass is then replaced by more liquid flowing from the reservoir. Thus, EP 538957 discloses features (1)-(4) and (6) of claim 1. However, features (5), (7), (8) and (9) were in dispute.
In EP 538957 the outlet of the bottle is in direct contact with a porous mass, which is supported by a bottom wall of the holder extending transversely to the discharge direction. The outer wall of the holder projects perpendicularly upwardly from the extreme edges of the bottom wall. The bottom wall of EP 538957 is spaced from the discharge opening (by at least the thickness of the porous mass). A series of fingers project perpendicularly up from this bottom wall (like a series of fence posts around a circular field) through the porous mass, and engage with the outer surface of the neck of the bottle, thereby holding the bottle in place. The opponent submitted that the bottom wall of the holder of EP 538957 was equivalent to the closing wall of claim 1. They submitted that this wall at least partly closed the discharge opening of the bottle (i.e. feature (7)), and that, in combination with the openings between the fingers, it defined a liquid opening into a "channel" formed by the fingers and the outer wall of the holder. In EP 538957, this "channel" has an outlet that abuts the porous mass. The opponent also submitted that the fingers which engaged the bottle neck, collectively, equated with the nipple (feature (5)). With regard to feature (8), which requires that the closing wall have a liquid passage through it as well as at least one air supply opening in it. The opponent submitted that the gaps between the fingers of the "nipple" performed both these tasks. They submitted that the liquid passage was effectively in the lower part of the gap where the porous mass passed through. Thus, the upper part of the gap, where there was no porous mass, allowed air to pass back to the top of the porous mass not in contact with the bottle's outlet and through the porous mass into the bottle. This part of the gap was, therefore, an air supply opening. For feature (9), the opponent submitted that, by its very operation, the bottle of EP 538957 would suck in air as its liquid drains away, and its interior pressure would reach equilibrium. This equilibrium would always be determined by the weight of the liquid and ambient air pressure. Therefore, as a result of this operation, and as far as they understood the wording in the claim, feature (9) was evident in EP 538957.
I do not agree with this reading of EP 538957 onto the claim. Even if it could be shown that the fingers could be equated to the nipple of feature (5), and that, because of the operation of the device, feature (9) was considered disclosed (although I have serious doubts about this), to my mind features (7) and (8) are not present.
The claim requires that the closing wall "partly closes" the discharge opening. From the Macquarie Dictionary, the most relevant definition of the word "close" is "to stop or obstruct (a gap, entrance, aperture, etc)". Thus the closing wall is meant to function such that the discharge opening of the bottle is closed off in some way, so that only a constricted part of that opening allows liquid to flow through it. It is difficult to see how a wall spaced from a discharge opening can "stop or obstruct" that opening. The liquid is not limited to flowing through a constricted part of the opening. Therefore, feature (7) is not disclosed.
However, even if I am wrong, and the bottom wall of the citation can be considered to partly close the discharge opening, the claim would still be novel as, in my opinion, the citation does not disclose feature (8).
Looking at the opponent's investigation of feature (8), while their submissions as to the path of liquid and air may be correct, the great problem with this argument is that this places the openings in the nipple, while the claim defines the closing wall as carrying the liquid passage and the air supply opening, not the nipple. The opponent submitted that, since the nipple was integral with the bottom wall of the citation, it is part of the closing wall. This is unconvincing. The nipple is defined as a different part to the closing wall. The distinction is quite clear. While the nipple may be integral with the closing wall (as, indeed, it is in the present application), there is a part of this construct that is identified as the closing wall, and another part that is identified as the nipple. It is the part identified as the closing wall that is defined as carrying the openings. Hence, feature (8) is not disclosed in the citation.
Thus, claim 1 and, therefore, claims 2-8 are novel in the light of EP 538957.
The ground of inventive step, while raised in the statement of grounds and particulars, was not pursued at the hearing. Prima facie there appears to be an inventive step in the invention as claimed in the provision of air supply openings. The opponent advanced no evidence, either at the hearing or in the declarations, about whether such features were in the common general knowledge of this art in Australia. In relation to this ground, the opponent has not established its case.
CONCLUSION
The opposition on the ground of lack of clarity is not successful. The claims are clear. The term "substantially equal" has a clear meaning from the specification as a whole.
The opposition on the ground of insufficiency is not successful. While the experts appearing for both sides came to opposite views, the approach of the expert for the applicant is to be preferred. In particular, it is important when reading a patent specification to apply the common general knowledge of the art when necessary, and to recognise that a process of trial and error may be needed in making the invention. It is not necessary for the specification to give details that the addressee of the specification (the person skilled in the art) can supply from their own background knowledge. The former was the approach of the applicant's expert, while the latter appears to have been the (incorrect) expectation of the expert of the opponent.
The opposition on the ground that the claims lack fair basis is successful. In particular, the claims do not include the feature that the air supply openings were spaced from the porous mass so that they communicated directly with the ambient pressure.
The opposition on the ground that the invention is not a manner of manufacture is not successful. The invention is a manner of manufacture because it is more than the new use of a Mariotte Flask. While both operate on the same principle, this is not the same as saying both are the same contrivances.
The opposition on the ground of lack of novelty is not successful. The invention as claimed is novel as the prior art does not disclose all the essential features of the claims. In particular there is no disclosure of a closing wall which partly closes the discharge opening of the air freshener's reservoir, or the closing wall carrying air supply openings.
In spite of the lack of fair basis, I am of the clear view that patentable subject matter exists in the specification. I give the applicant 60 days from the date of this decision to propose suitable amendments to overcome this objection.
COSTS
Costs normally follow the event. The opponent has been largely unsuccessful in their opposition except in regard to a minor section 40 issue. However, the applicant has been aware of the section 40 problem from the beginning and has not taken the opportunity to amend. In these circumstances I consider it appropriate that no award of costs be made.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Allens Arthur Robinson, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney